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Intellectual Property
Law
Intellectual property (�IP�) lawyers deal with inventions,
creations, and other �intellectual� and intangible types of
property. The term "intellectual property�� is used in its
general sense to describe:�A product of the intellect that has
commercial value, including copyrighted property such as literary
or artistic works, and ideational property, such as patents,
appellations of origin, business methods, and industrial
processes.�
Examples of intellectual property are music, books, movies,
artwork, product names, logos, slogans and packaging, inventions
that qualify for patent protection, and information that is kept
secret and not commonly known.
When people think of IP lawyers, they usually think of patent
attorneys, which is no surprise given that a good majority of IP
lawyers are patent attorneys. Patent attorneys, however, are not
the only types of IP attorneys. Under the umbrella of IP lawyers
also fall trademark, copyright, trade secret, and
Internet/e-commerce attorneys.
DIFFERENT TYPES OF IP LAW AND IP
ATTORNEYS
Significantly, where property such as machines may have once been
the primary source of a company’s worth, in today’s economy much of
a company’s worth comes from the ownership of intellectual
property. In general, there are five basic types of intellectual
property work that attorneys do.These areas are: a) Patent, b)
Trademark, c) Copyright, d) Trade Secret, and e) Licensing.
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PATENT LAW. Patent law protects inventions. By
filing and obtaining a patent from the United States Patent and
Trademark Office, the inventor of a product receives a monopoly on
the commercial exploitation and use of a product for up to 20
years. Patents can protect the functional features of a process,
machine, manufactured item, asexually reproduced plant, or
composition of matter, for example.
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TRADEMARK LAW. Trademark law protects words,
phrases, logos or symbols used to distinguish one product from
another. In circumstances where a competitor uses a protected
trademark, the holder of the trademark can go to court and obtain
an injunction to stop the use.
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COPYRIGHT LAW. Copyright law protects the
creators of expressive works, such as artists, photographers,
writers, and musicians, and gives them the exclusive right to
protect how their works are used. It is important to note that,
unlike trademark law, copyright law does not protect names or
titles. One way that copyright law can be distinguished from
trademark law is in the advertising context. Trademark law would
commonly protect the name of the product being advertised, while
copyright law would protect the expression. For example, the
statement in an advertisement: "If you drive this X car, you will
undoubtedly realize it is among the best in the market for what it
does," is an example of something that would have elements of
copyright and trademark within it.
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TRADE SECRET LAW. A trade secret is “A secret
formula, method, or device that gives one an advantage over
competitors.” If the owner of the trade secret takes reasonable
steps to keep the trade secret “secret,” courts will protect the
trade secret owner from unauthorized disclosure by (1) industrial
spies, (2) competitors who wrongfully acquire the trade secret, (3)
employees of the owner of the trade secret, and (4) anyone with any
type of duty not to disclose the information.
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LICENSING LAW. While licensing law may make
use of all the areas of law above, it is a popular-enough type of
work that it merits some discussion. A license is a grant of
permission to do something with an otherwise protected work or
product. Copyright holders, for example, can give permission to
other individuals to copy their work, or a trademark owner can
grant a license to another to use the trademark.
PATENT ATTORNEYS–WHY ARE THEY IN SUCH
DEMAND?
Without a doubt, the largest demand for intellectual property
attorneys is for those who can do patent work. Approximately 85% of
the intellectual property placements we make are for patent
attorneys. Reviewing the listings on our website, one finds there
are more openings for patent attorneys than for many other practice
areas combined. So the question is, why is the demand so
high?
First, patent attorneys are rare. Over the past five years, the
percentage of practicing patent attorneys simply has not increased
as a percentage of all the attorneys practicing in the United
States.The percentage of practicing patent attorneys compared with
the total attorney population has consistently remained at
approximately 11/2 percent.There are only approximately 20,000
patent attorneys in the United States, while there are
approximately 1,000,000 other attorneys.
Second, to become a patent attorney, it is not enough to take the
bar exam of a given state. In addition, an attorney must also take
the United States Patent and Trademark Office’s Patent Bar
Exam.
Third, to even sit for the Patent Bar, an applicant needs prior
scientific or technical-level training at the bachelor's-degree
level in a science or engineering field (or significant college
credits in one of these fields).While there are certainly many
people who graduate each year with technical and science degrees,
very few of these people may have any interest in attending law
school (and accumulating high levels of debt) because the market
for these individuals is extremely good even without a law degree.
Over the past several years, the demand for people to do research
and development has grown rapidly, and many of these people can
easily get super jobs without ever attending law school.Virtually
every person who operates a computerdependent business knows how
difficult it is to find computer programmers, for example. In the
biotechnology arena, there is also a high number of positions that
consistently go unfilled.
Fourth, assuming the potential patent attorney even has the
requisite training to qualify to take the Patent Bar, he/she must
also pass it, and the pass rate for the patent bar exam is much
lower than for most bar exams; it typically ranges from 28% to
40%.
Fifth, the demand for patent attorneys is compounded by the fact
that the need for patents has continually increased dramatically.
For example, a recent article in the Legal Times stated that the
number of patents issued each year has increased 30-40 percent
since 1990. During the same period of time, the number of software
patents increased by approximately 200 percent.
Sixth, it is also important to note that attorneys with technical
expertise in certain fields are far more likely to obtain
employment as patent attorneys than other types of patent
attorneys.This fact, in turn, makes the pool of potential
candidates for patent positions even smaller.While there are
certainly differences that could be pointed out, for the most part
the expertise of patent attorneys falls into the following
categories: (1) the life sciences, (2) chemistry &
pharmaceutical, (3) material science, (4) electrical engineering,
(5) physics, (6) mechanical engineering, (7) medical devices, and
(8) computer science. In terms of demand, the greatest demand is
for attorneys with backgrounds in electrical engineering or
computer science (more than 90% of our clients seeking patent
attorneys are looking for those with an electrical engineering or
computer science background).There is also a strong demand for
attorneys with biotechnology, biochemistry, or organic chemistry
backgrounds.The lesser demand is for those with mechanical or
chemical backgrounds.
WHY ARE PATENT ATTORNEYS SO DIFFICULT TO
RECRUIT?
Recruiting patent attorneys is unique. Patent attorneys, in
general, are a bit more risk averse than most other attorneys.
Also, patent attorneys are aware that they are very in-demand and
that they are in a “buyer’s market.”Thus, they can afford to be
very choosy about opportunities. Furthermore, because patent
attorneys are scientists and very used to analytical and detailed
thinking, they will rarely make a move unless they have thoroughly
investigated and weighed all the variables of their various options
in what could seem to be excruciating detail.
PATENT AGENTS–WHAT ARE
THEY?
Patent agents are not attorneys, but they can perform limited
functions before the USPTO without a law degree (assuming that the
person has the proper science/technological degree and passes the
Patent Bar). Many firms like to hire patent agents because they can
perform patent prosecution at a much cheaper billing rate than a
regular patent attorney, which some clients appreciate.
WHAT IS THE DIFFERENCE BETWEEN PATENT
PROSECUTION AND PATENT LITIGATION?
Simply stated, patent prosecutors deal with filing and registering
patents ith the USPTO. The term “patent prosecution” also typically
encompasses patent counseling (e.g., writing opinions regarding
whether a certain invention is patentable).
Patent litigation is more akin to general litigation, but the
parties are litigating issues relating to certain patents. Unlike
patent prosecutors, patent litigators do not need to have a science
background. However, having the science background is very helpful
in terms of understanding the technology, which is often highly
complex.
Typically, patent litigation is more lucrative than patent
prosecution because patents are so valuable and the stakes are so
high. For example, if a company loses a patent, it can lose
millions upon millions of dollars.Thus, the big picture is
important in patent litigation, and clients are much more willing
to spend $1-to-10 million on legal fees if it means saving
$10-to-100 million in the long run.
WHAT ABOUT TRADEMARK, COPYRIGHT,
LICENSING,TRADE DRESS (“SOFT IP”) ATTORNEYS?
The opportunities for trademark/copyright and other “soft IP”
attorneys are fewer and far between.There are several reasons
why.
First, the trademark, copyright, and licensing fields are not
nearly as complex as the patent field, and they do not require a
specialized scientific or technical background. In fact, many
corporate attorneys are comfortable doing trademark work at a basic
level.
Second, as the dot-com frenzy has slowed and many domain name
disputes (where unscrupulous people were registering as domain
names the trademarks of many companies) are more under control,
there has been a slowdown in trademark work as compared to 1998
through 2000.
Third, while there are some high-profile exceptions to this rule
and some firms have extremely sophisticated trademark/copyright
practices, very few firms in the United States have separate
trademark and copyright licensing departments. Many patent
attorneys may be called upon to do both trademark and copyright
work in addition to whatever their field of specialization is in
the patent field. In addition, some people perceive that trademark
and copyright licensing work is less intellectually taxing than
doing patent prosecution. Many patent attorneys like doing
copyright and trademark work because it is a break of sorts from
doing straight patent prosecution. Accordingly, many firms and
corporations like to offer patent attorneys a wider variety of work
to keep them happy.
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